Addressing the question of what corresponding structure must be disclosed to support a means-plus-function claim element, the U.S. Court of Appeals for the Federal Circuit upheld a district court finding that eight computer-implemented means-plus-function elements were indefinite because the specification failed to disclose any algorithms. EON Corp. IP Holdings LLC v. AT&T Mobility LLC, Case No. 14-1392 (Fed. Cir., May 6, 2015) (Prost, C.J.).

The district court granted summary judgment of invalidity in two consolidated district court cases, concluding that eight means-plus-function elements, each reciting computer-implemented functions, were indefinite. The patent owner admitted that the specification did not disclose any algorithms for the recited functions, but argued that they were achievable without special programming and thus covered by the exception for such functions as set forth in the 2011 Federal Circuit case of In re Katz (IP Update, Vol. 15, No. 3), an exception that provides that certain recited functions were not indefinite where a general purpose competitor “need not be specially programmed to perform the recited functions.” The district court analyzed the special programming question based on whether the programming was commercially available and concluded that the means-plus-function elements did not qualify for the exception because they were not available in off-the-shelf programs. EON appealed.

The Federal Circuit disagreed with the district court’s off-the-shelf analysis and also rejected the EON’s arguments based on the relative simplicity of the programming involved. The Court instead found that the algorithm exception only covers so-called “basic” processor functions that are “coextensive” with the processor itself—such as processing, receiving and storing—and that all other computer-implemented functions require a disclosed algorithm. Next, the Federal Circuit rejected EON’s alternative argument that no algorithm was required where an ordinarily skilled artisan could have implemented the claimed software function, explaining that the knowledge of a skilled artisan is irrelevant in cases where no algorithm whatsoever is disclosed. In cases where there is an algorithm of disputed adequacy the knowledge of the artisan is relevant, but only as the viewpoint from which the issue of adequacy is determined.

Relying on the district court’s factual findings that implementing the claimed functions would require special code and resort to algorithms outside the specification, the Federal Circuit went on to affirm the district court’s indefiniteness holding.